Letter from Amerikat: Birthday Bits 'n Bobs

The AmeriKat is celebrating her 2nd birthday this week (she will leave you to calculate her age in Kat years). During the past few days she has cast her mind back to reminisce over the past two years in music, film, politics, and law. When she was a fresh kitten, the radios were booming with Madonna, Queen, Beastie Boys and Peter Gabriel and movie theaters were welcoming audiences to watch Top Gun, Pretty in Pink and Aliens. And in law, in the January that the AmeriKat was born, Kodak lost a patent infringement case with Polaroid, a loss which signalled Kodak's exit from the instant camera business. Today, we may still have Madonna booming away, but this time it is through our iPods. Patent law has also come a long way from the instant camera days. Nowadays our patent wars focus on mobile phone technology, albeit still concerning their camera technology as well as their touch-screen capabilities. This brief journey down memory lane just goes to show that over the past two *cough* years, everything changes, but everything stays the same be it in music or in IP law.

Lawyer Barbie back in the Federal Circuit dealing with Bratz - Something else that has not changed all that much from last year is the continuation of the Barbie v Bratz battle (previously reported by the AmeriKat here) which last week heard the parties' opening arguments in Californian federal court before Judge Carter. Barbie's maker, Mattel, alleged that the maker of the Bratz doll - MGA Entertainment- stole the idea for the Bratz doll by entering into a deal with the designer of the doll who had previously worked for Mattel. Mattel subsequently filed for copyright infringement and trade secret violations, while MGA alleges unfair competition and also trade secret theft. The case being heard by the court last week follows the previously overturned $100 million verdict of Judge Larson in favor of Mattel. MGA appealed this 2008 ruling on the grounds of incorrect jury instructions and an overly broad injunction. The US Court of Appeals for the Ninth Circuit agreed holding that the federal court judge had erred in ruling that Mattel automatically owned the designer's sketch of the doll under the terms of the 'Employee Confidential and Inventions Agreement' between Mattel and the designer and remanded the case back to the federal court. At the end of 2010 both parties applied for summary judgment on the issue of copyright infringement for the first and second generation Bratz dolls. Judge Carter granted summary judgment in MGA's favor in respect of the second generation Bratz dolls, but the remaining issues, including breach of copyright for the first generation of Bratz dolls and the breach of confidence/trade secret claims, remained for trial.

Following Judge Larson's departure from the federal bench, Judge Carter will now be rehearing Mattel's claims, but unlike the first trial the court will be tasked with determining whether the Inventions Agreement entitles Mattel to the designer's ideas for names like "Bratz" together with sketches that he created outside working hours. Also, ripe for ruling is MGA's trade secret claim against Mattel. Last year, MGA filed a counterclaim alleging that Mattel conducted an elaborate corporate espionage scheme in which Mattel employees, including general counsel Robert Normile and their attorneys from Quinn Emanuel, engaged in a racketeering conspiracy in order to gain access to MGA's private showrooms to obtain confidential information of Mattel's competitor's plans. According to a report last year in Am Law Litigation Daily, Quinn Emanuel partner Michael Zeller said that MGA's claims were "second-rate tactics by desperate lawyers" that "won't survive the pleading stage." Well, apparently they have! Mattel's lawyers say that in so far as the information MGA shared was shared at toy fairs, this information does not constitute a trade secret and therefore MGA is not entitled to their claimed $475 million in damages. The trial continues.

MJ's estate increases litigious activities - Last week, Michael Jackson's estate sued a website who is selling a book written by the singer's mother, Katherine Jackson, alleging copyright infringement. As reported by the Associated Press, Howard Mann, who operates the domain name www.jacksonsecretvault.com (picture, right - a shot of the allegedly infringing website left) is on the recieving end of the suit that alleges that he and the website are infringing copyright and are also liable under unfair competition laws. The complaint is reported to allege that the site is using the late singer's likeness and sketches that he drew and is said to creating a fasle endorsement by virtue of the inclusion of a "special thanks" to the estate. In a statement, the estate's attorney Howard Weitzman said that

"The Estate had hoped Mann would voluntarily cease his conduct but that was not to be. People who trade off of Michael's personality, copyrights and trademarks should not be allowed to exploit the legacy of one of the world's most recognized talents for their own benefit."

For more information see these reports in Hollywood Reporter and AP.

Koons's Balloon Dog to pop gallery's bubble? - Artist Jeff Koons has claimed copyright infringement against San Francisco gallery Park Life over a set of bookends that look like Koon's Balloon Dog, i.e. they look like balloon dogs. What do we think IPKat readers? Can Koons claim copyright infringement for anything that resembles a balloon dog? The AmeriKat thinks his lawyers, reported to be Jones Day, must have a field day at children's birthday parties.... For a more in depth look at that saga please see this excellent article in the New York Times. For how to make a balloon dog or an allegedly infringing Koons dog, please click here. (Pictures below from left to right - Koon's Balloon Dog; Park Life's balloon dog bookends; a balloon dog)

USPTO renews its IP Australia vows - Last week USPTO and IP Australia announced the extension of their existing pilot Paris Convention Patent Prosecution Highway (PPH) agreement and the formation of a new PPH pilot agreement utilizing the Patent Cooperation Treaty (PCT-PPH) results. PPH agreements improve efficiency by allowing patent examiners to use work already undertaken in respect of the same claim or claims already reviewed at other patent offices and PCT Authorities. USPTO Director Kappos has stated that by including the PCT "more work can be shared between our two offices. This will benefit applicants by reducing patent pendency and improving quality.” According to the USPTO press release the addition of the PCT international phase work

"will greatly expand the usefulness of the PPH program to applicants and the offices. The new PCT-PPH pilot is scheduled to launch on January 24, 2011. The PPH pilot program and the PCT-PPH pilot program between the USPTO and IPAU are both currently scheduled to continue until April 13, 2012."

Pancake house drops suit against a house of God - Last year the AmeriKat reported on the trade mark suit filed by US eatery chain IHOP which stands for the International House of Pancakes against the International House of Prayer also known as IHOP. Unfortunately, however, there will be no courtroom fireworks in battle between pancakes and God, because four days before Christmas IHOP dismissed its case against the church citing "ongoing mediation with the defendants."

Norwegian patent application decline: a riposte

Last Thursday, in an apparently innocent post entitled "Stats from Norway", the IPKat published the thoughts of the pseudonymous Norman regarding a sudden decline in the number of Norwegian patent applications.  

Right: "this patent system isn't dead, it's pining for the Norwegian fjords ..."

Today the IPKat received a response to Norman from a fellow Norwegian who was not merely pseudonymous but actually anonymous. He writes:

"As an avid Norwegian reader of your blog, I am somewhat surprised by the coverage of Norway lately. In your latest posting you asked whether anyone could see why the decline has been so large, I would actually have a few educated guesses. Briefly on my background, I have worked with an agency for a number of years before now working at a TTO [the IPKat assumes this stands for 'Technology Transfer Office' and not 'Trondheim Tourist Office' or some such] for the past few months. I evidently don’t have that much industry experience, although I am opinionated.

First, Norway is a marginal market. Thus, given the crisis, it makes sense to exclude the marginal markets first. A full filing in Norway is expensive, full translation needed, expensive agents, high costs all round, thus I would postulate that in times of crisis Norwegian patent applications would not easily be prioritized. This would explain the rapid decline of filings in the latter half of last year.

Secondly, if one looks at the numbers 2007 was actually an exceptional year, possibly having the highest number of filings of any time. A decline from a very high level to a level more or less the same as previous years makes sense in times of crisis.

Thirdly, one of the major contributions to the decline are the “yellow” applications. This is perfectly natural. Instead of filing directly into the Norwegian national phase, the applicant has the possibility to file directly in to the European national phase, less costly, covers more ground, and might actually be a freebie, if you intend to file in Europe. There is a decline of 400 applications in this regard.

In conjunction with a small decline in the national filings, probably due to the crisis, I would consider the total decline perfectly explainable.

Thus instead of trying to explain the decline by assuming that applicants are clueless, I would explain the decline by the applicants being rational. I find this more satisfying.  After all, this isn’t the first time a country has joined the EPO. They have managed the transition in earlier years, so why assume that they can’t now?

As a final point, the redundancies at the offices are one of the natural responses to the major upheavals we are facing in Norway in preparation for a significant proportion of the PCT applications to be filed at the EPO instead of at NIPO. This will evidently greatly influence the patent agent industry, in particular those agencies dependent on the foreign applications. Some have 95 % of their work from these applications, and they will need to adapt or die".

The IPKat sees the correspondent's point, and wonders whether readers from any other 'marginal countries' would like to offer their thoughts and comments.  Merpel says, Norway is the most marginal country in the world: it seems to consist almost entirely of borders and edges.

Three things Norway is famous for here, here and here

Stats from Norway

The IPKat's anonymous Norwegian friend (let's arbitrarily call him Norman), who previously expressed some concern about the unexplained drop in ex-PCT applications in 2008 after Norway joined the EPC, has written again with some more concrete information.  Norman writes (with some clarifying IPKat editing):

"Statistics from the Norwegian Patent Office (their preferred English name is now the "Norwegian Industrial Property Office" - NIPO) is now available in Norwegian. English translation is coming up, however I am happy to provide a quick translation of the essentials regarding patenting.

In the graph below (available here), grey represents PCT applications brought into national phase in Norway, yellow represents national application filed by foreign applicants (utenlanske), and cream represents national application filed by national applicants (innenlandske).

The reason for the relatively large cream fraction is possibly applications relating to offshore industries and fish farming, where it is not worth the cost to bring the application through the PCT process

As can be seen there is a decline. What is not apparent is that the major part of the decline took place in the last few months of 2008. There have already been multiple rounds of redundancies, something I don't think has ever happened in the Norwegian IPR firms before. The entire industry is going through a major reorganisation and this is not painless.

First of all it must be said that for a country where subtlety is on par with Ben Elton going full tilt on a Saturday night live [IPKat comment: younger readers may not recall, but Ben Elton was once a well known stand-up comedian], NIPO is showing remarkable restraint and more than a touch of understatement when stating (translated) ' In 2009 NIPO received 5420 patent applications, a decline of 18.5% compared to 2007. A certain amount of decline was expected due to entering the EPO, however this is larger than calculated. One possible cause is that some foreign applicants have mistakenly believed that international applications (PCT applications) dated prior to 1 January 2008 and filed with EPO for regional phase during 2008 would lead to rights in Norway. This, however, is only possible for applications with international filing date later than 1 January 2008.'

Norwegian text:
I 2008 mottok Patentstyret 5 420 patentsøknader, en nedgang på 18,5 % i forhold til 2007. En viss nedgang i antall søknader var forventet på grunn av EPO-medlemskap, men denne er større enn beregnet. Én sannsynlig årsak er at en del utenlandske søkere feilaktig har trodd at internasjonale patentsøknader (PCT-søknader) datert før 1. januar 2008 og innlevert til EPO for behandling i regional fase i løpet av 2008, også ville kunne føre til rettigheter i Norge. Dette er imidlertid bare mulig for søknader med internasjonal søknadsdato etter 1. januar 2008.

So in summary there is a significant decline in Norway but not in Sweden (see http://www.prv.se/Patent/Statistik/).

Statistics for Denmark are also now available:
   National  ( http://www.dkpto.dk/media/34655/statistik_patent.pdf ) only minimal change,
   International ( http://www.dkpto.dk/media/34658/statistik_international_patent.pdf ) again only minimal change for PCT or for EP."

The IPKat can see Norman's point, and cannot think of any other reason that would explain why the number of national phase applications in Norway fell so rapidly in 2008.  Can anyone else?

New PCT Supplementary Search

Charles Clark (no, not that one) has emailed the IPKat to inform him that WIPO has recently announced, in the December PCT Newsletter, that a new search service is due to be launched as from 1 January 2009.  This will be known as the Supplementary International Search, under new Rule 45bis PCT (hidden deep inside this pdf document).  The point of this, so WIPO says, is to allow applicants to have their international patent application more comprehensively searched in languages other than that in which the ISR is carried out.  When this service comes in, the languages that will also be searched, courtesy of the Nordic, Russian or Swedish searching authorities will include Russian, Swedish, Norwegian, Icelandic and Danish. 

Of course, all this extra searching will not be free of charge.  A supplementary search fee (payable to the IB, naturally) will cost the applicant between 455 and 2,826 Swiss Francs, depending on which institute is selected.  The applicant must also request any search no later than 19 months after the earliest priority date, but this should (in theory at least) allow the results to come in before a decision needs to be made on what to do in the national phase (at 30/31 months).  

The IPKat can see how this would be a good idea, but only for a very limited selection of applicants and if there is a concern that there might be killer prior art lurking somewhere in one of these languages that has not been translated into a more commonly searched language.  It might, however, become much more useful for applicants once Japan and China join the party, which seem to be the most obvious next candidates.